In a recent
article it has been commented that there is an “unforeseen advantage” to the unitary
patent (or to non-opted out European patents) – namely the extension of the scope
of contributory infringement from a national level to a (nearly) Europe-wide
level.
I don’t think this advantage was unforeseen, I think it was
intended: however matters may not be so simple as appears.
Article 26 of the Agreement is not solely applicable to
unitary patents as the UPC is not solely applicable to unitary patents (Article
1) and wherever “patent” is referred to both ordinary (“bundle”) and unitary patents are meant (Article 2(g)).
The effect of the Agreement thus appears to be to broaden
national infringement law and expand the scope of contributory infringement - for
both unitary patents and “bundle” patent litigated before the UPC – to cover supply or offer to supply an “essential
element” anywhere among the Contracting States where the European patent has
effect.
While I think that is a good thing, I am not sure that all
of the consequences have been thought through.
EPC Article 64 states that:-
“A European patent shall, subject to the provisions of paragraph 2,
confer on its proprietor from the date on which the mention of its grant is
published in the European Patent Bulletin, in each Contracting State in respect
of which it is granted, the same
rights as would be conferred by a national patent granted in that
State”.
and
“Any infringement of a European patent shall be dealt with by national law.”
However, a national patent only gives rights in respect of
that state and, for example, a UK national patent is not necessarily infringed
by supply or offer to supply an essential element in the UK, where the directly
infringing act is intended to take place in, say, Germany - even if a national
German patent exists.
On a more general level, Article
5 of the Regulation on the unitary patent states that:-
“The acts against which the patent provides
protection referred to in paragraph 1 and the applicable limitations shall be
those defined by the law applied to European patents with unitary effect in the participating Member State whose
national law is applicable to the European patent with unitary effect as an
object of property in accordance with Article 7.”
This means that the acts
constituting infringement of a unitary patent where the applicable law is that
of Germany will be considered under German law even though the effect is
throughout the participating states. For another participating state (e.g. UK)
the unitary patent (or a European patent litigated through the UPC) will thus not grant the same rights as a national patent (or a European patent litigated through the national courts) and
will not be assessed by national law.
This appears contrary to the
provisions of Article 64 EPC.
This, to my simplistic mind, means that to provide the
breadth of scope for contributory infringement that is envisaged by the UPC, it is necessary to provide identical breadth of scope to
national patents, for example, in the UK, by amending Article 60(2) Patents Act
to read:-
Subject to the
following provisions of this section, a
person (other than the proprietor of the patent) also infringes a patent for an
invention if, while the patent is in force and without the consent of the
proprietor, he supplies or offers to supply in the United Kingdom a person
other than a licensee or other person entitled to work the invention with any of
the means, relating to an essential element of the invention, for putting the
invention into effect when he knows, or it is obvious to a reasonable person in
the circumstances, that those means are suitable for putting, and are intended
to put, the invention into effect in the United Kingdom or any country
participating in the Agreement of the Unified Patent Court where an equivalent
national or European patent is in force .
I dislike using colloquialisms
when discussing European matters, but this whole project is a
dog’s breakfast that may become
proverbial.
